Commissioner of Patents v. Whiteley
71 U.S. 522

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U.S. Supreme Court

Commissioner of Patents v. Whiteley, 71 U.S. 4 Wall. 522 522 (1866)

Commissioner of Patents v. Whiteley

71 U.S. (4 Wall.) 522

Syllabus

1. Where an applicant for reissue of a patent has done all in his power to make his application effectual -- has filed his application with the acting Commissioner and paid the requisite amount of fees -- the application is to be considered as properly before the Commissioner.

2. Where a statute directed the Commissioner of Patents to grant a reissue of patents in certain cases to "assignees," it is the duty of the Commissioner to decide whether the applicant is an assignee with such an interest as entitled him to a reissue within the meaning of the statutory provision on the subject; and if he has thoroughly examined and decided that the applicant is not so, a mandamus will not lie commanding him to refer the application to "the proper examiner or otherwise examine or cause the same to be examined according to law." The preliminary question was within the scope of his authority. If the mandamus had ordered the Commissioner to allow an appeal, the order under which it issued would have been held correct.

3. Mandamus cannot be made to perform the functions of a writ of error.

4. Semble that an applicant for a reissue of a patent under the thirteenth section of the Patent Act of 1836, which allows a reissue in certain cases to a patentee "and in case of his death or any assignment by him made of the original patent" vests a similar right "in his executors, administrators, or assignees," must be an assignee of the whole interest in the patent, and not the assignee of a sectional interest only. At least where the Commissioner of Patents had thus decided, this Court, on the questions being raised in connection with other questions, whose decision rendered a decision on it unnecessary, say that "as at present advised they were not prepared to say that the decision of the Commissioner was not correct."

Whiteley, the defendant in error, was the assignee of a sectional interest in a patent granted to Hains, on the 4th of September, 1855, for an improvement in mowing machines. He held, by virtue of several assignments, all the territory embraced in the patent, except the state of Ohio and the northern half of the State of Illinois; and in all the territory, except as just mentioned, was assignee of all the rights of the patentee.

In 1863, he applied to the Commissioner of Patents for a reissue of the patent, according to the thirteenth section of the Patent Act of 1836, a section which enacts that:

Page 71 U. S. 523

"Whenever any patent &c., shall be inoperative or invalid, by reason of a defective or insufficient description or specification &c., if the error has or shall have arisen by inadvertency, accident, or mistake &c., it shall be lawful for the Commissioner, upon the surrender to him of such patent &c., to cause a new patent to be issued to the said inventor for the same invention, for the residue of the period then unexpired for which the original patent was granted, in accordance with the patentee's corrected description and specification. And in case of his death, or any assignment by him made of the original patent, a similar right shall vest in his executors, administrators, or assignees."

The assignees for the State of Ohio, and of the northern half of Illinois, did not join in the application.

The Commissioner of Patents, after a laborious investigation of the law and comparison of various sections of the patent acts, decided that the applicant, not being the assignee of the whole interest in the patent, was not entitled to the reissue asked for.

Whiteley took no appeal from the Commissioner's decision to the "board of examiners," but setting forth that his application for reissue was filed with the acting Commissioner, and the refusal, petitioned the Supreme Court of the District of Columbia for a mandamus to send the application to an examiner to be acted upon by him as though made by the patentee.

The Commissioner, in reply -- premising that for the reason that the proposed applicant was not such an assignee as the law contemplates, and that the application, therefore, was not filed, or entered upon the books of the office, and never had been, and that the fees required on such application, which had been paid by the relator to the chief clerk of the office, on the presentation of said application, had not been placed to the credit of the patent fund, but remain in the hands of the chief clerk, personally, and subject to the order of the relator -- replied, among other reasons, against the mandamus:

1. That the object of it was to carry by appeal a preliminary question solely cognizable by him, to the Supreme Court of the District, and that such a mandamus would be nugatory.

Page 71 U. S. 524

2. That he had decided rightly in rejecting the application, the relator not coming within the meaning of the term "assignee," as contemplated in the thirteenth section of the act of 1836. And in support of this view he submitted as part of his answer a full law argument, which now came up in the record.

The Supreme Court of the District granted the mandamus,

"commanding the Commissioner of Patents to refer said application to the proper examiner, or otherwise examine or cause the same to be examined according to law."

The case was now here on writ of error, brought by the Commissioner of Patents, to remove the proceeding to this Court. Two principal questions were raised:

1. Supposing the decision of the Commissioner to have been erroneous, and that the assignee of a sectional interest in a patent was entitled to a reissue, did a mandamus such as that above mentioned lie to correct the decision?

2. Did the Commissioner, in deciding as he did that the applicant as owner of but a sectional interest was not entitled to a reissue, decide correctly?

In order to judge of the first question it is necessary to state:

1. That the Patent Act of 1836, by its seventh section, provides that on the filing of any application for a patent, "The Commissioner shall make or cause to be made an examination of the alleged new invention or discovery," and if on such examination it does not appear that the same had been invented or discovered by any other person &c., he shall issue the patent. But if, on the contrary, he shall decide that the applicant was not the original and first inventor &c., and the applicant shall insist on his claim,

"such applicant may on appeal have the decision of a board of examiners to be composed of three disinterested persons who shall be appointed by the Secretary of state for that purpose,"

which board shall have power "to reverse the decision of the Commissioner, either in whole or in part."

2. That by an act of 1837, in addition to the former act, it is provided that in cases of application to the Commissioner

Page 71 U. S. 525

for reissue, the applicant, if dissatisfied with the decision of that officer, "shall have the same remedy and be entitled to the same privileges and proceedings as are provided by law in the case of original applications."

Page 71 U. S. 530

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